Do I need a patent agent?

Technically, you do not need a patent agent to file a patent application. As an inventor, you are able to draft and file your own patent application and then upon filing, hire a patent agent to assist you with the examination process, or you can receive and respond to the Examiner’s reports (often called an Office Action) yourself.

However, you should be aware that there are a number of challenges in the patent drafting and prosecution process that make it more difficult for inventors to embark on the process themselves, with new ones coming up all of the time.

Claim Drafting

Perhaps the biggest obstacle in the patent drafting process is related to claim drafting. Most inventors (and indeed many patent agent trainees) tend to draft their claims too narrowly. If they do, they may not even become aware of the scope of monopoly that they have given up, because the patent examiner is only too glad to grant a patent with overly narrow patent claims. A skilled and experienced patent agent can work with you to identify your inventive concept, which is not uncommonly quite different than what was originally perceived by the inventor, and draft a comprehensive set of claims that cover the inventive concept, in a layered fashion, so that as broad a scope of monopoly as the inventor may be entitled is obtained, while establishing fall-back positions in the event that prior art is uncovered.

In many technical areas, including the high technology and chemical / pharmaceutical fields, there are specific rules that have been developed by the government of different countries and/or the patent courts. These rules prohibit certain types of claims on the basis of lack of patentable subject matter. In many cases, these prohibitions can be circumvented with the assistance of an experienced patent agent by subtle changes to the form and structure of the claims.

Believe it or not, an experienced patent agent can even save you money through claims drafting. In many jurisdictions, including the US and the EP, penalties are assessed if a threshold number of claims is exceeded. Some jurisdictions such as the US, have exotic patent claim counting rules so that even if you think you have less than the threshold number of claims, you may be subject to expensive excess claims fees.

As well, historically, a complicated set of rules for drafting claims has developed, with the result that modern valid claims tend to be unreadable gibberish to the untrained person. These rules include restrictions on punctuation, antecedents, use of acceptable conjunctions and more.

Patent Descriptions

There are also challenges in the drafting of the patent description as well, although these tend to be less critical. The most important rule is the prohibition against adding subject matter after the initial patent filing. An experienced patent agent can help you extract further details that should be set out in the description to facilitate the examination process later.

Other rules include the enablement and best mode requirements in many jurisdictions. Some jurisdictions have specific rules about ensuring there is support in the figures and/or the description for specific types of claims, such as method claims. Failure to abide by these rules may result in the invalidation of the patent at a later date.

During the examination process, deadlines abound. As a general rule, these need to be strictly observed. A patent agent will docket these deadlines and provide timely reminders of these upcoming deadlines to maximize the likelihood that they will not be missed. At different stages in the examination process, there may be more than one course of action, with different deadlines, or a multiplicity of steps that need to be undertaken. The Examiner will not routinely explain these options at all, or in an understandable fashion. Failure to respond correctly, however, cannot be excused on the basis of ignorance or lack of experience, and has dire consequences, including the loss of patent rights.

Finally, care must be taken, especially in some jurisdictions, in terms of how to respond to the Examiner’s concerns. Injudicious statements made in response to an Office Action may unintentionally limit the scope of protection that a patent might otherwise be entitled after it eventually issues.

With all of the foregoing in mind, we believe that your energies are best served by concentrating on developing your technology and growing your business, instead of focusing on the confusing and detailed minutiae of the various patent rules that need to be understood and obeyed.

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